IP Case Law Analysis

March 5, 2012

Within two years after issuance of a patent, consider filing a reissue application with at least one broadening claim to preserve the ability to add other broadening claims in the future.

When filing a narrowing reissue application within two years after issuance of the patent, consider adding a broadening claim as well to preserve the ability to broaden in the future.

Once a broadening reissue application has been filed, consider keeping continuing reissue applications pending in case an opportunity arises to target claims to a competitor.

Overview

In In re Erik P. Staats and Robin P. Lash, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) further construed the statute governing reissue patents, which states that “[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.”

The Federal Circuit extended its predecessor court’s holding in In re Doll that the two-year time limit only applies to the filing date of the first broadening reissue application. Once a reissue application with at least one broadening claim is filed within the two-year time limit after issuance of the patent, there are no further restrictions on what broadening claims can be filed later, including claims to different embodiments and claims in continuing reissue applications.

Case Background

U.S. Patent No. 5,940,600 issued to Staats on August 17, 1999. It disclosed two different embodiments for managing isochronous data transfers, but claimed only the first embodiment. On August 17, 2001, the last day within the two-year time limit for broadening reissues, Staats filed a first broadening reissue application, also directed to the first embodiment. Later, Staats filed a second broadening reissue application as a continuation of the first reissue application, also directed to the first embodiment.

A third broadening reissue application was filed as a continuation of the second reissue application, and claims directed to the second embodiment were filed during prosecution of the third reissue application on June 11, 2007. This was the first time the second embodiment was claimed in any way, almost eight years after the original patent had issued.

The patent examiner in the third reissue application rejected the claims to the second embodiment because they were “not related in any way to what was covered in the original broadening reissue.” The U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences sustained the examiner’s rejection because the claims were “directed to an invention that [was] independent and distinct” from what was claimed in both the original patent and the first reissue.

Both the examiner and the Board recognized they were bound by Doll’s holding that further broadening claims can be first presented outside the two-year period as long as the first broadening reissue application was filed within the two-year period. However, the PTO argued that Doll was distinguishable on its facts because the further broadened claims in Doll were “related to the subject matter covered by the claims identified and broadened within the two-year window.” By contrast, the PTO argued, the public notice requirement implicit in the reissue statute’s two-year time limit is not met when an applicant adds unforeseeable claims that are unrelated to the originally broadened claims, outside of the two-year window.

Decision Analysis

The Federal Circuit rejected the PTO’s arguments and reversed the rejection of Staats’s claims to the second embodiment added almost eight years after the original patent issued. According to the Federal Circuit, the holding in Doll was not limited to its specific facts, and made no distinction between related and unrelated claims. Moreover, the Federal Circuit found the PTO’s approach to be unmanageable, as it would require determining when later claims are “related to” earlier claims, and “would be difficult to administer in a consistent and predictable way.” The Federal Circuit therefore held that as long as the first broadening claim is filed within two years of the original patent’s grant, there are no further limitations on other broadening claims that can be added later during reissue prosecution.
Takeaways

The holding in this case gives reissue patent applicants wide latitude in adding essentially any desired broadening claim that is supported by the patent’s specification, at any time while a broadening reissue application is pending. The only requirement is that the first broadening reissue application be filed within two years of the original patent’s issue date.

To take advantage of the opportunity to broaden the claim coverage of an already issued patent, consider filing a reissue application with at least one broadening claim within two years of the patent’s issue date. Because other broadening claims added later during reissue prosecution need not be “related to” the original broadening claim(s), almost any broadening claim will do in the first instance to preserve the later opportunity to determine what claim scope is truly desired. Be aware, though, that filing the reissue application will require explaining how the need to broaden is related to an error that occurred during the prosecution of the original patent application. Also consider whether to broaden in a way that will avoid issues of intervening rights.

Once a broadening reissue application is on file, consider keeping at least one continuing reissue application pending even after the first reissue patent issues, in case an opportunity should arise to add targeted claims later in the life of the patent.